Postgraduate Student at Faculty of Law, Istanbul University, Turkey
Erasmus student at Faculty of Law in University of Maribor, Slovenia
The new Turkish Industiral Property Code (no. 6769) entered into force on January 10, 2017. The new Code united and replaced the Decree Laws on Trademark and Service Marks, Patents and Utility Models, Industrial Designs and Geographical Indications. The new Code also changed the name of the “Turkish Patent Institute” to the “Turkish Patent and Trademark Office”. In the following paragraphs of this blog post, the main changes in the new Code are explained.
The Changes about Trademarks
Color and voice marks have been added to the scope of definition of markings that may be trademarks.
Signs that contain geopraphical indications cannot be registered as a trademark.
The co‐existence of trademarks is now available by way of submission of co‐existence agreement or letter of consent. According to Article 5-(3) of the IP Code, the TPTO cannot ex-officio refuse a trade mark application on the grounds that it is identical with or confusingly similar to a trade mark registered or previously applied for registration for the same or similar of goods/services, if a notarized letter of consent from the senior trade mark owner to the registration of the application is submitted to the TPTO.
Opposition period for trademark application has been shortened from three months to two months. In order to make trademark application process quicker.
According to Article 9 of the Law, a trademark that has not been genuinely used or ceased to be used for successive five years with respect to goods and services that it is registered for, will be cancelled.
The law accepts “five-year period” as the timeframe for the principle of loss of rights by remaining silent and excludes trademarks filed in bad faith from its scope. So the five-year term for filing an invalidation action is also regulated in the code.
Article 25(6) of the law regulated a specific provision for the principle of the loss of right by remaining silent:
“In case a trademark owner has remained silent for the five consecutive years where he knows or should know that the later dated trademark is used, he cannot allege its trademark as an invalidation ground unless the subject trademark registration was filed in bad faith.”
There was no provision for the time frame of ‘loss of right by remaining silent’ principle in the Decree-Law No. 556. The Court of Appeal accepts that the right holder can lose his rights by remaining silent for a long time, even if the counter party is in bad faith. It is stated in the Turkish doctrine that the time frame must be determined by taking into consideration the conditions of tangible case and pursuant to the ‘Principle of Honesty’.
According to Article 19-(2), if an opposition is filed against a trademark application and the opposing trademark was registered in Turkey at least five years before the filing date of the application, the opponent must submit evidence to show genuine use of the trademark in Turkey or a legitimate reason for non-use if the applicant of the contested trademark application requests this information from the TPTO. The opposition will be refused unless sufficient evidence is submitted to prove genuine use in Turkey. The law also provides that this request can be used as a defence in invalidation and infringement actions.
Bad-faith added to grounds for refusal and it can be directed in any
oppositions/appeals before the TPTO and invalidation actions before the IP Courts.
The new law provides for the protection of the well‐known status of a mark, even if not recorded in Turkey, is available as a relative opposition ground.
National Exhaustion principle has been replaced with International Exhaustion, i.e., after the first sale in Turkey, products can circulate freely on the Turkish market regardless of where it originates and without the need to obtain permission from the rights holder. Rights holders could not prevent parallel imports of related products, provided that they are original and have not been altered or damaged since they entered the market.
The Changes about Patent and Utility Model
Patent-without substantive examination system which provided protection of 7 years has been abolished.
Third parties are allowed to file oppositions within the 6-month period after a patent has been granted (post-grant opposition system), Utility model applications are subject to novelty search and applicants can file amendments during the registration proceedings, no substantial examination.
It is not applicable to protect chemical and biological substances or products obtained from these chemical and biological substances; pharmaceutical preparations and products obtained pharmaceutical preparations; biotechnical inventions and methods or products obtained from these inventions and methods as utility models.
Criminal measures are no longer applicable for infringement of patents, while legal measures still exist.
Under the new IP Code, any inventions made by scientific staff (including Ph.D. students and non-Ph.D. students) as part of their university employment, belong to the university under certain conditions. This new requirement removes the previous “professor’s privilege”, provided under the Decree Law that provided that researchers and academicians working at universities could automatically own the invention subject to the patent. The new IP Code also states that at least 1/3 of the income generating from use of the patent will belong to the inventor researcher/academician.
National Exhaustion principle has been replaced with International Exhaustion, i.e., after the first sale in Turkey for the patents and utility models.
The Changes about Designs
The term of “Industrial Designs” has been changed to “Designs”. All designs shall be protected, regardless of being industrial or not.
The new law provides for the protection of unregistered designs for three years after the first date of disclosure to public in line with Article 11 of the EU Community Designs Regulation.
Novelty search becomes a part of the formal examination. Hence, the office may reject an application based on the related ground.
A complex product’s parts are not registrable if not apparent/observable. Only visible parts of a complex product shall be protected provided that they meet novelty and individual character criteria (in accordance with EU regulations).
Opposition period for design application has been shortened from six months to three months. In order to make design application process quicker.
Design descriptions are no longer required and scope of protection will not be effected by such description if it is filed.
Professors’ privilege removed: right to register a design crafted by scientific staff while at work deemed to belong to universities; thereby entitling scientific staff to claim for at least half of the income deriving from such design commercialization.
National Exhaustion principle has been replaced with International Exhaustion for the designs.
Criminal measures are no longer applicable for infringement of designs, while legal measures still exist.
As we can see, the New Industrial Property Code aims to unify the previously separate decrees pertaining to various forms of industrial property such as trademarks, patents and utility models, industrial designs and geographical indications within the scope of a very single code and meanwhile, to simplify all the proceedings covered by Decree-Laws No. 551, 554, 555 and 556 until now.
The Code helps Turkish Law to harmonize with EU regulations about Industiral Property Law and the recent developments within.
The Code also contains all the criminal provisions and sanctions in a systematical way which provided in the Decree-Laws before.
As a conclusion, as indicated in the previous sections, the Industrial Property Code has been formulated in accordance with EU laws and practices and therefore, will be a vital step in the EU harmonization process.